OPPOSITION No B 3 050 975

Sanjay y Sandeep, Camí del Mig 89, 08940 Cornellà de Llobregat, Barcelona, Spain (opponent), represented by Olten Patentes y Marcas, Rambla de Catalunya 66, Planta 6ª, GH, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Beijing Sogou Technology Development Co. Ltd., Level 9 Sohu.com Internet Plz No. 1 Unit Zhongguancun East Road, Haidian District, 100084 Beijing, People’s Republic of China (applicant), represented by Prinz & Partner mbB Patent- und Rechtsanwälte, Rundfunkplatz 2, 80335 München, Germany (professional representative).

On 30/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 975 is partially upheld, namely for the following contested services:

Class 35: Advisory services relating to business management and business operations; business appraisals; business investigations; compiling and analysing statistics, data and other sources of information for business purposes; personnel recruitment; providing business information via a web site; systemization of information into computer databases; all of the aforesaid services not in the field of medicine, scientific research and health.

2. European Union trade mark application No 17 690 223 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 690 223 for the figurative sign , namely against all the services in Class 35. The opposition is based on Spanish trade mark registration No 2 788 161 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

The Office, in its letter of 23/07/2018, informed the opponent that the time limit to substantiate the earlier right and submit further material expired on 02/12/2018. The opponent submitted its observations on 04/12/2018, that is, after the time limit expired. Therefore, these observations cannot be taken into account in the present proceedings.

Furthermore, on 10/09/2019 the applicant submitted a request for proof of use and another round of observations. The Office, by its letter of 16/09/2019, informed the parties that, inter alia, no further observations may be submitted. The parties were also informed the Office will take a decision on the opposition on the basis of the evidence before it.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

In its letter of 17/04/2019, that is, within the time limit laid down by the Office, the applicant requested proof of use with regard to the earlier mark. However, in the same letter the opponent set forth its arguments concerning other issues, such as the similarity of the signs, the similarity of the services and the likelihood of confusion. Therefore, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Consequently, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

At the later stage of the proceedings the applicant once again requested that the opponent submit proof of use of Spanish trade mark registration No 2 788 161 which was done in a form of a separate document.

It should be however explained that according to Article 10(1) EUTMDR, a request for proof of use pursuant to Article 47(2) or (3) EUTMR will be admissible only if the applicant submits such a request within the period set by the Office for the applicant to file its observations in reply to the notice of opposition and to all the supporting facts, evidence and arguments submitted by the opponent.

On 18/07/2018 the Office invited the applicant to submit its observations. The time limit was initially to expire on 23/01/2019. Furthermore, it was extended twice (i.e. until 02/02/2019 and, afterwards, until 19/02/2019). Eventually, it was extended until 19/04/2019 following the Office’s letter of 28/02/2019. The applicant’s request for proof of use in a form of a separate document was submitted on 10/09/2019, that is, after the expiry of the time limit.

Therefore, the request for proof of use is not admissible pursuant to Article 10(1) EUTMDR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The services

The services on which the opposition is based are the following:

Class 35: Retail sales services in establishments of electronic articles and articles of household goods; import, export and representation services in exclusive.

Class 39: Services of transportation, storage and distribution (distribution) of electronic products and of household goods.

The contested services, after the limitation request by the applicant, are the following:

Class 35: Advertising services; advisory services relating to business management and business operations; business appraisals; business investigations; compiling and analysing statistics, data and other sources of information for business purposes; search engine optimization; on-line advertising on a computer network; personnel recruitment; providing business information via a web site; sponsorship search; systemization of information into computer databases; all of the aforesaid services not in the field of medicine, scientific research and health.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

It should be also explained that the phrase all of the aforesaid services not in the field of medicine, scientific research and health added by the applicant is a limitation excluding from protection services relating to the field of medicine, scientific research and health.

Contested services in Class 35

The contested advisory services relating to business management and business operations; business appraisals; business investigations; compiling and analysing statistics, data and other sources of information for business purposes; providing business information via a web site; all of the aforesaid services not in the field of medicine, scientific research and health have some points of contact with the opponent’s import, export services in exclusive.

Import and export services relate to the movement of goods and normally require the

involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. These services are aimed at supporting or helping other businesses to do business and are preparatory or ancillary to the commercialisation of goods.

The contested services belong to the broad category of business management services. Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share.

For these reasons, the services in conflict are similar. They usually coincide in relevant public and distribution channels. Furthermore, they are often provided by the same companies.

Furthermore, it should be explained that business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives.

Personnel recruitment; all of the aforesaid services not in the field of medicine, scientific research and health are specific services that are intended to help companies operate their business and refer to the process of attracting, screening, and selecting qualified people for a job at an organization or firm. Systemization of information into computer databases; all of the aforesaid services not in the field of medicine, scientific research and health are part of the day-to-day operations of a business and consist of the act of planning and/or organizing something electronically in a computer system. Therefore, these services are similar to the opponent’s representation services in exclusive which could be various services of representation, such as for the purposes of receiving correspondence, for the purposes of getting into contact with potential and current business partners or clients, employees, etc. Therefore, the services in question usually coincide in relevant public and distribution channels. Furthermore, they are often provided by the same companies.

The contested advertising services; search engine optimization; on-line advertising on a computer network; sponsorship search; all of the aforesaid services not in the field of medicine, scientific research and health have no points of contact with the opponent’s services in Classes 35 and 39.

All of these contested services belong or are at least closely related to the broad category of advertising (advertising services; search engine optimization; on-line advertising on a computer network; sponsorship search; all of the aforesaid services not in the field of medicine, scientific research and health). Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

The opponent’s import, export and representation services in exclusive have been described in detail above.

With regard to the opponent’s retail sales services in establishments of electronic articles and articles of household goods it should be explained that retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale). Moreover, the Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34).

As far as the opponent’s services of transportation, storage and distribution (distribution) of electronic products and of household goods are concerned, they relate respectively to the organization of movement of humans, animals and goods, the process of storing goods in magazines and storehouses, and the service of delivering products from the manufacturer/sender to customers/recipient.

There are clear-cut differences between the services in conflict. They differ not only in their nature and purpose, but also in their distribution channels, providers and method of use. Furthermore, they are neither in competition nor necessarily complementary. For these reasons, these remaining contested services are dissimilar to the aforesaid opponent’s services.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be similar are directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the services purchased.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The verbal element of the earlier mark ‘SOGO’ has no meaning for the relevant public and is, therefore, distinctive. The verbal elements ‘Human Technology’ do not exist in Spanish, but can be easily associated with their equivalents namely ‘Humano’ and ‘Tecnología’. The element ‘Human Technology’ of the earlier mark will be associated with the body of information, skills, and experience developed for the production and use of goods and services. Bearing in mind that the relevant services are business-related, this element is weak for these services. The stylisation of the letters in the earlier mark is commonplace and its role in the comparison is very limited. The element ‘SOGO’ in the earlier mark is the dominant element as it is the most eye-catching.

Consequently, the role of the verbal element ‘Human Technology’, due to its size, position and meaning, will be at most secondary, while it is ‘SOGO’ that will carry the most weight in the consumer’s perception of the sign, as the sign’s dominant and most distinctive element.

The verbal element of the contested sign ‘Sogou’ has no meaning as well and is, therefore, distinctive. Next to the verbal element ‘Sogou’ in the contested sign, there are logograms that may be perceived by the public as characters belonging to Asian writing systems, for instance Chinese. The relevant public will not attribute any specific meaning to these figurative elements. Therefore, they are distinctive. The stylisation of the letters in the contested sign is slight and plays a secondary role in the comparison. The contested sign has no element that could be considered clearly more dominant than other elements.

Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). Accordingly, it is relevant to note that in the present case the main coincidences are found in the verbal elements, and therefore in the part of the signs causing stronger impact, as it will be explained in detail in the comparison below.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right/top to bottom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader. It is therefore relevant to note that in the present case the coincidences between the marks are found at the beginning of the contested sign, as it is explained in detail below.

Visually, the signs coincide in ‘SOGO’/’Sogo*’. However, they differ in two verbal elements ‘Human Technology’ of the earlier mark and the last letter of the sole verbal element in the contested sign, namely ‘Sogou’. Furthermore, they differ in the figurative device resembling Asian script in the contested sign as well as the stylisation of the letters and colours used in the signs.

Therefore, and upon taking into account the above considerations on the distinctiveness and impact of the elements of the signs, they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SOGO’/’Sogo, present identically in both signs. The pronunciation differs in the sound of the last letter of the sole verbal element in the contested sign, that is, ‘Sogou’. It is very unlikely that, due to their relation to the services at issue, size and position, the verbal elements ‘Human Technology’ of the earlier mark will be pronounced. Even if pronounced, they would not be able to offset the near identity coincidence in the first and most influential elements of the signs distinctive verbal element

Therefore, the signs are at least aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The verbal elements ‘SOGO’ and ‘Sogou’ cannot be compared as they have no meaning for the Spanish-speaking public. The figurative device in the contested sign will not be associated with any specific meaning. The relevant public will understand the verbal elements ‘Human Technology’ of the earlier mark as indicated above. Since one of the signs will not evoke any concept the signs are conceptually not similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods

and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The services are partly similar and partly dissimilar. They target the professional public whose degree of attention may vary from average to high. The signs are visually similar to an average degree and aurally at least similar to an average degree. Furthermore, the signs are conceptually not similar. As explained above, the earlier mark has a normal degree of distinctiveness.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

The sole verbal element of the contested sign incorporates entirely the dominant and distinctive verbal element of the earlier mark, that is, ‘SOGO’. The signs have in common four letters in their distinctive verbal elements (out of five in the contested sign). It is particularly striking that the same word is reproduced in the contested sign at its beginning. The fact, that the earlier mark ‘SOGO’ is entirely included in the contested sign assumes a particular relevance in the light of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. The signs differ in the last letter ‘u’ in the verbal element ‘Sogou’ of the contested sign. This difference can be even overlooked/overheard by consumers. Furthermore, they differ also in some secondary aspects, such as the verbal elements of the earlier mark ‘Human Technology’, the stylisation of the letters and colours used in the signs in conflict as well as the figurative device resembling Asian script in the contested sign. The Opposition Division is of the opinion that these differences between the signs cannot outweigh their visual and aural similarities.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Teodora TSENOVA-PETROVA

Michal KRUK

Lucinda CARNEY

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.